How tall is your claim? Strategically acing patent scope

Abstract

Purpose The article examines strategically directing the breadth of scope of a patent and hazards of litigation vis-à-vis the length of claims for innovating firms. Design/methodology/approach This paper enumerates latest literature on assessing patent scope and hence protection afforded to firm innovations. Based on prior research findings, this paper proposes to maintain a balanced and nuanced approach to claim drafting to assure grant of patent while minimizing litigation threats. Findings To strategically manage patent grant and minimize litigation threat, firms would better take a leaf out of academic discourse and streamline claim drafting – not too wide to earn an examiner’s ire and not too narrow to let an infringer bypass by. Unlike smaller firms or universities, big firms are less likely to renew a patent with less scope. Research limitations/implications The study sample in contemporary literature is exclusive to patents from US Patent and Trademark Office. Whether the same result will be replicated for diverse countries is uncertain. Practical implications The understanding that patent scope not only influences grant chances but also is an indicator of future litigation threat can help patent practitioners and innovating firms in strategically directing the patent. Originality/value The paper draws from the findings of three well-articulated recent research papers. The paper’s originality and value is in providing practical insights on how to perfect patent scope in a real world based on academic discourse.